USPTO Patents Application 09931037

Nov-15-04 10:02am Frora-KOGAN & HARTSON

T-780 P. 009/014 F-6G1

Serial No. 09/931,037

Reply to Office Action of September 22, 2004

REMARKS/ARGUMENTS

Prior to this Amendment, claims 1-23 were pending in the application.

Independent claims 1 and 23 are amended to clarify that in the claimed
method a user provides user input to select a module for upgrade and then selects
components within that module for upgrading. Further, the user is able to select the
source of modules (or portions of the module) and provide the location of the
module selected for upgrade. No new matter is added with support found in
Figures 1 and 1 1 and in the corresponding text.

Claims 18-22 are canceled.

New independent claim 24 is added to further protect features of the
Invention not shown by the references presently of record in the case. No new
matter is added with support being found at least in Figure 1 1 and the
corresponding portions of the specification beginning at para. [0027],

After entry of this Amendment, claims 1-17, 23, and 24 remain for
consideration by the Examiner.

Claim Objections

In the Office Action, claims 2 and 5 were objected to based on the use of
M OMS" without spelling the acronym out. Claim 2 is amended to spell out the
acronym and because claim 5 depends from claim 2, this objection is addressed.
Specification Objections

The specification was objected to due to the use of the acronym "OMS", and
this objection is addressed with an amendment that spells out the acronym the first
time it was used in the specification.

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Nov-15-04 10:03am Frora-HOGAN & HARTSON

T-780 P. 010/014 F-661

Serial No. 09/931,037

Reply to Office Action of September 22, 2004

Claim Rejections Under 35 U.S.C. Si 12

In the Office Action, claims 1 , 2, and 5 were rejected under 35 U.S.C. §112,
second paragraph as being indefinite. Claim 1 included the limitation "source and
destination site parameter", and the Office Action stated this was unclear as to the
number of parameters. Claims 2 and 5 were rejected as indefinite due to the use of
the acronym "OMS".

Claim 1 is amended to clarify the claim language.

Claim 2 is amended to address the rejection of claim 2 and also claim 5,
which depends from claim 2.

Claim Rejections Under 35 U.S.C. §101

The Office Action rejected claims 18 and 22 as being directed to non-
statutory subject matter. Claims 1 8 and 22 are canceled.

Claim Rejections Under 35 U.S.C. 6102

In the Office Action, claims 1-23 were rejected under 35 U.S.C. §102(b) as
being anticipated by the "BuyerXpert4.1 SP3 Upgrade Guide (hereinafter
BuyerXpert). This rejection is traversed based on the following remarks.

BuyerXpert is not a proper reference under 35 U.S.C. §1 02(b). The Office
Action cites a publication that was said to be published on June 1999 (i.e., "Industry
Slices Up Procurement Pie) for providing a 1999 publication date for BuyerXpert.
The 1999 publication mentions on page 2 a -BuyerXpert 3.0" product. In contrast,
as shown on page 1 , BuyerXpert is a document describing "BuyerXpert 4.1 SP3 "
(emphasis added), which is clearly a different product. Hence, the publication date
for BuyerXpert is not by inference the same date as the 1999 publication.
Applicants did not find a publication date on BuyerXpert. but a last modified date of
October 8, 2001 was provided (see, for example, pages 3 and 25), which is later
than Applicants' filing date. Because BuyerXpert is not a proper reference under 35
U.S.C. § 102(b), the rejection of claims 1-23 based on BuyerXpert is improper and
should be withdrawn.

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Nov-15-04 10:03am Frora-HOCAN i HARTSON

T-780 P. 011/014 F-6S1

Serial No. 09/931,037

Reply to Office Action of September 22, 2004

Additionally, in the Office Action, claims 1-3 and 12-23 were rejected under
35 U.S.C. §1 02(e) as being anticipated by U.S. Pat. No. 6,628,314 (" Hoyle").
Claims 18-22 are canceled. The rejection of claims 1-3, 12-17, and 23 is traversed
based on the amendments to the claims and the following remarks.

Claim 1 as amended calls for providing a set of modules in a user interface
and then receiving user input indicating a selection of one of the modules for
upgrade and one of the components associated with the selected module for
upgrade. User input is also received indicating a location of the module and a
destination for the upgraded module (or portions of the modules). In this manner,
the method of claim 1 is able to address the issues with previous systems that
failed to allow "operators of e-commerce sites... to upgrade particular utilities... [as]
there are no mechanisms by which an operator can define which upgrade utilities
are needed and which modules these upgrades are intended for."

With regard to claim 1. the Office Action cites Hoyle's Figures 7 and 13 for
teaching each element of claim 1 . However, neither figure discusses or suggests
that modules are provided on a user interface, that a user input is received
selecting a module and at least one component associated with the module for
upgrade, and then, user input is received indicating a source for the module.
Instead, with reference to col. 13, line 45 to col. 14, line 17 and col. 20, lines 19-47,
Hoyle discusses a builder component 64 that acts automatically to build a blueprint
of a system indicating the system's components and which version of the
component is on the system, to compare the existing blueprint with an "update"
blueprint, and then based on that comparison to automatically upgrade all
components that are not the newest version. This is a very different process than
called for in the method of claim 1 , as the method of claim 1 involves user input
being provided to select modules and components for upgrade. Because Hoyle
falls to teach providing modules In a user interface and receiving the various user
input called for in claim 1. Hoyle does not support a rejection of claim 1, and the
rejection should be withdrawn.

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Nov-15-04 10:03am Froro-HOGAN S HART SON

T-780 P. 01 2/01 4 F-

Serial No. 09/931.037

Reply to Office Action of September 22, 2004

Claims 2, 3. and 12-17 depend from claim 1 and are believed allowable as
depending from an allowable base claim.

Independent claim 23 is directed to a computer program product with
limitations similar to claim 1 but in differing form. Hence, the reasons provided for
allowing claim 1 over Hoyle are believed to be applicable to claim 23, and
Applicants request that the rejection of claim 23 be withdrawn.

Claim Rejections Under 35 U.S.C. 3103

Further, in the Office Action, claim 4 was rejected under 35 U.S.C. §1 03(a)
as being unpatentable over Hoyle in view of U.S. Pat. No. 6,697,784 ("Bacon").
Claim 4 depends from claim 1 and is believed allowable as depending from an
allowable base claim. Further, Bacon fails to overcome the deficiencies in Hoyle
noted with reference to claim 1. As a result, the combination of Hoyle and Bacon
fails to support a rejection of claim 4.

The Office Action rejected claim 5 as being unpatentable over Hoyle in view
of U.S. Pat. No. 6,779,082 ("Burger"). Claim 5 depends from claim 1 and is
believed allowable as depending from an allowable base claim. Also, Burger does
not overcome the deficiencies discussed above with reference to claim 1 .
Therefore, claim 5 is allowable over the combined teachings of Hoyle and Burger.

Yet further, the Office Action rejected claim 6 as being unpatentable over
Hoyle in view of U.S. Pub. No. 2004/0148232 ("Fushimi"). Claim 6 depends from
claim 1 and is believed allowable for the reasons for allowing claim 1. Further,
Fushimi does not overcome the lack of teaching in Hoyle discussed with reference
to claim 1 .

The Office Action also rejected claim 7 as being unpatentable over Hoyle in
view of U.S. Pat. No. 5,630,069 ("Flores"). Claim 7 is believed allowable as
depending from an allowable base claim, i.e., claim 1. Flores does not overcome
the deficiencies of Hoyle with respect to claim 1 .

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Nov-15-04 10:03am Frora-HOGAN & HARTSON

T-780 P. 013/014 F-

Serial No. 09/931,037

Reply to Office Action of September 22, 2004

Further, the Office Action rejected claim 8 as being unpatentable over Hoyle
in view of U.S. Pub. No. 2002/0023001 ("McFarlin"). Claim 8 depends from claim 1
and is believed allowable as depending from an allowable base claim.

The Office Action rejected claim 9 as being unpatentable over Hoyle in view
of U.S. Pub. No. 2004/0098446 ("Styles"). Claim 9 depends from claim 1 and is
believed allowable as depending from an allowable base claim. Further, Styles
does not provide the teaching missing from Hoyle, which was discussed with
reference to claim 1.

Yet further, the Office Action rejected claim 10 as being unpatentable over
Hoyle in view of U.S. Pat No. 6,681,229 ("Cason"). This rejection is traversed
because claim 10 depends from claim 1 f which is allowable over Hoyle.
Additionally, Cason does not overcome the deficiencies in Hoyle discussed above
with reference to claim 1.

Finally, the Office Action rejected claim 1 1 as being unpatentable over Hoyle
In view of U.S. Pub. No. 2003/0167401 ("Murren"). Claim 1 1 depends from claim 1
and is, therefore, believed allowable as depending from an allowable base claim.
Additionally, Murren fails to overcome the deficiencies in Hoyle discussed above
with reference to claim 1.

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Nov-15-04 tQ :04am Fr era- HOG AN & HARTSON

T-780 P. 014/014 F-661

Serial No. 09/931.037

Reply to Office Action of September 22, 2004
Conclusions

In view of all of the above, Applicants request that a timely Notice of
Allowance be issued in this case.

No fee is believed due for this submittal. However, any fee deficiency
associated with this submittal may be charged to Deposit Account No. 50-1 123.

Respectfully submitted,

November 15. 2004

Kent A. Lembke, No. 44,866
Hogan & Hartson lip
One Tabor Center
1200 17 th Street, Suite 1500
Denver, Colorado 80202
(720) 406-5378 Tel
(303) 899-7333

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